Appeal 2006-3252
Application 09/536,728
H
R1
N
R4 N
N
1 R3 R2 H
2 Formula 8
3 York's R1 corresponding to Esser's R5 can be methyl or ethyl;
4 York's R4 corresponding to Esser's R3 is hydrogen, as is Esser's R3;
5 York's R3 corresponding to Esser's R2 is ―NR5R7, where
6 R5 can be hydrogen or lower alkyl and
7 R7 can be hydrogen or lower alkyl; and
8 York's R2 corresponding to Esser's R1 can be methyl, ethyl, fluoro,
9 bromo or iodo.
10 While Esser claim 73 includes additional compounds and York
11 describes additional compounds, it is apparent that there is a considerable
12 overlap in the Esser and York compounds. What the considerable overlap
13 shows is that granting a patent to Esser containing claim 73 would preclude
14 those with skill in the art, and the public, from using a sizeable number of
15 York compounds for York's purpose. For reasons advanced in connection
16 with the Olson analysis, § 103 operates to preclude Esser from preventing
17 the public from using the York compounds for York's purpose.
18 Esser claims 74-81 involve a similar overlap in coverage and therefore
19 are unpatentable for the reasons given in connection with Esser claim 73.
20
31
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